What trade mark owners need to know in Ireland
It had been generally accepted in Ireland that the registration of a trade mark in black and white or greyscale (B&W) would provide protection for that mark in all colours.
This has now changed as a result of the Common Practice of the Scope of Protection of Black and White Marks (the “Common Practice“), which has been agreed by the trade mark offices of the European Union through the European Trade Mark and Design Network. Now, the protection granted by the registration of a B&W mark has narrowed, particularly if that mark is actually used in colour.
The concept of “identity” is central to the Common Practice. In essence, identity between trade marks is now to be interpreted strictly. So, a B&W trade mark will not be considered identical to the same trade mark in colour unless the difference in colour is “insignificant.” According to the Common Practice, an insignificant difference is one which a “reasonably observant consumer will perceive only upon side by side examination of the marks.”
The Common Practice is only relevant to three areas of trade mark practice as applied by trade mark registries:
- whether a trade mark registered in B&W is considered identical to the same mark in colour as regards priority claims;
- whether a trade mark registered in B&W is considered identical to the same mark in colour as regards relative grounds for refusal; and
- whether use of a mark in colour is considered use of the same trade mark registered in B&W.
It is important to note that the Common Practice principles do not apply in trade mark infringement proceedings.
An applicant’s ability to claim six months priority will be lost if the earlier registered mark is in B&W while the later mark applied for is in colour, unless the differences in colour are insignificant.
According to the Irish Patents Office (IPO), this will be the only real change to trade mark practice in Ireland. The IPO has acknowledged that it had allowed “some leniency” where a claim of priority was based on a B&W mark and the mark applied for was in colour. Now, the IPO must ensure that the marks are identical if it is to grant priority.
An owner of a B&W trade mark cannot bring opposition proceedings against an application for the same mark in colour on the basis that the marks are “identical” unless the differences in colour are insignificant. In practical terms, this means the owner of the B&W mark will now have to show confusion, which adds an extra hurdle in opposition proceedings. Therefore as a result of this strict identity requirement there is likely to be a decrease in objections under Section 10(1) on the basis of identical marks.
According to the Common Practice, the use of a colour version of a trade mark registered in B&W (or vice versa) is only acceptable for the purposes of establishing genuine use if the change in colour does not alter the distinctive character of the trade mark.
It is worth noting that the test for genuine use of a trade mark in infringement proceedings remains unchanged. For example, in the recent Specsavers case in the UK, the use of a registered B&W mark in colour was held to be genuine use of that mark for the purposes of an infringement action.
Impact and brand owners
In the meantime, brand owners should carefully review their trade mark portfolios to determine whether any trade mark registrations in B&W are actually used in colour. This is particularly relevant if the colour element is an important part of the brand. If key trade marks are used in colour but only registered in B&W, then fresh applications should be made for those marks in colour. The registration fees involved should be offset by the certainty this will bring to brand owners.
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